Imagine That IP Law Blog

A company may spend millions of dollars prosecuting and maintaining a patent portfolio designed around products, markets, and competitive threats identified five or ten years ago. The portfolio may contain excellent patents. The harder question is whether they are the patents the company would choose to own today.

Businesses change faster than patent portfolios. Products evolve, R&D priorities shift, companies enter new markets and make acquisitions, and new competitors emerge. Patents, by contrast, can remain in force for decades. Even a well-managed portfolio can ... Read More ›

Aggressive IP enforcement can be a powerful tool for protecting product designs, brand equity, and market position. But the related proceedings between Deckers Outdoor Corporation and Last Brand, Inc., d/b/a Quince, show the other side of that strategy: when enforcement becomes sufficiently broad, repetitive, or unsuccessful, the enforcement campaign itself may become the subject of litigation.

Following the jury verdict in Deckers Outdoor Corp. v. Last Brand Inc., Quince did not simply declare victory and move on. As discussed in our companion post on the Deckers jury trial ... Read More ›

On the surface, design patents often look straightforward: a handful of drawings, one claim, and a short specification (description). But the recent path of Deckers Outdoor Corporation’s U.S. Design Patent No. D927,161 (161 Patent) shows how deceptively complex design-patent enforcement can become once a patent moves from prosecution to PTAB challenge to jury trial.

The ’161 Patent survived an inter partes review (IPR) challenge at the institution stage. Yet the same design patent later went to trial, where a jury found infringement but also found the patent invalid ... Read More ›

The February 2026 federal district court and ITC complaints filed by General Motors against various aftermarket parties allegedly working “in concert” in the automotive replacement-parts market portend a new chapter in design-patent enforcement litigation. They may also provide a testing ground for two important Federal Circuit decisions: Automotive Body Parts Ass’n v. Ford Global Technologies, LLC, (“ABPA”) in 2019, and LKQ Corp. v. GM Global Technology Operations LLC,) (“LKQ”) in 2024. In those decisions, the Federal Circuit confirmed, on the one hand, in ... Read More ›

The Fourth of July is a natural opportunity for brands to focus on patriotic messaging, especially around America’s 250th celebration.

“Made in USA,” “American made,” “Built in America,” flag imagery, red, white, and blue packaging, and references to American workers or craftsmanship are all powerful marketing tools. They are also high risk advertising claims when the product, components, or manufacturing process do not fully support the claim. Accordingly, here is a timely reminder for companies to review how U.S. origin claims appear across packaging ... Read More ›

Increasingly, public AI tools that appear to be impressive are tempting to use for research, technology development, document preparation, and general queries on a variety of consequential issues including law in general, and patents in particular.  However, submitting information to a public AI tool can result in several overlapping dangers, such as patentability problems, loss of trade secret protections, breach of confidentiality obligations, and even export-control violations. 

Below, this article outlines some of the dangers that individuals, companies, and law firm ... Read More ›

Artificial intelligence (AI) is now a part of U.S. design patent examination, but not in the way some practitioners may expect. The latest public USPTO materials do not identify a new, post-DesignVision AI tool dedicated to design patent examination. Instead, the more important development appears to be that DesignVision has moved from a newly announced search tool to a routine part of the design examination workflow.

The USPTO launched DesignVision in July 2025 as “the first artificial intelligence (AI)-based image search tool available to design patent examiners” through ... Read More ›

In most commercially significant inventions, strategic filing of various types of “child” patent applications (patent applications extending from an original or “parent” patent application) in various worldwide jurisdictions is useful in capturing the full value of an original invention. The types of child applications include continuation, continuation-in-part, and divisional applications. The following notable distinctions are worth considering before filing a child application in any jurisdiction.

The first distinction is between continuation and ... Read More ›

Introduction
The person of ordinary skill in the art is central to many patent-law inquiries, but not in the same way across the Patent Act. Section 103 expressly asks whether the claimed invention would have been obvious to a POSITA. Section 112 often turns on what the skilled artisan would have understood from the disclosure. Claim construction likewise depends on how claim language would be understood in view of the intrinsic record. Section 101 is different. Unlike § 103, § 101 does not ask what would have been obvious to a POSITA. The POSITA enters eligibility indirectly, through ... Read More ›

Introduction
The recent debate over artificial intelligence and inventorship has often focused on a single question: can an AI system such as ChatGPT, DABUS, or another generative model be named as an inventor on a United States patent application? The Federal Circuit answered that question in Thaler v. Vidal, holding that the Patent Act limits inventorship to natural persons. Thaler v. Vidal, 43 F.4th 1207, 1211-13 (Fed. Cir. 2022). Yet the next wave of disputes is unlikely to end with Thaler. Parties will continue to argue that AI systems do more than merely assist human inventors ... Read More ›